Overview

Derek brings more than 20 years of experience to his work in patent prosecution, portfolio management, intellectual property due diligence, and technology transfer and licensing matters.

His strong track record of successful outcomes, coupled with his technical training as an electrical engineer, give Derek a unique perspective on the challenges facing in-house legal departments and technological innovators in a broad range of industries.

Clients turn to Derek for tactical guidance in the following areas:

  • Protecting electrical and computer technologies and business method and mechanical inventions by securing patent, copyright, and other IP property protection
  • Growing and managing large patent portfolios
  • Obtaining strategic patent coverage
  • Negotiating intellectual property licenses
  • Due diligence, product clearance, and litigation avoidance and support

Chambers USA has twice recognized Derek’s work in intellectual property law. He regularly speaks and writes on topics ranging from online privacy policies to software patents. 

Experience

Derek’s representative experience includes:

  • Managing patent preparation and global prosecution for Fortune 500 and multi-national companies for a variety of electrical, computer, and software technologies.
  • Preparing, analyzing and negotiating hundreds of software and other IP licenses and agreements.
  • He has specific experience with information technology (IT) and database systems; browser-wrap and click-wrap contracts; hosting services; SaaS and web services; cloud computing; open source licensing; source code and technology escrows, privacy policies and data security.

Representative technologies include:

  • Wireless communications systems and devices
  • Advanced vehicle electronics, control systems, and software
  • Telematics
  • Medical imaging systems and software
  • Medical devices and systems including ophthalmic surgical devices
  • MEMS technologies
  • Magnetic and ultrasonic sensing technologies
  • Driver monitoring and compliance systems
  • Point-of-sale, web-based services and other e-commerce systems
  • Cryptography
  • Building security and monitoring systems
  • Electric power technologies such as generators, switchgear and solar electric systems

Prior to joining Michael Best, Derek worked as a law clerk for the Office of Unfair Import Investigations for the U.S. International Trade Commission. He also has served as an engineering technician for the U.S. Army Armament, Munitions and Chemical Command.

Honors & Recognitions

  • Leading Intellectual Property lawyer, Chambers USA, 2012 and 2013 

Professional Activities

  • Member, American Intellectual Property Law Association (AIPLA)
  • Member, International Association of Privacy Professionals (IAPP)
  • Member, The Institute of Electrical and Electronics Engineers (IEEE)

Education

Admissions

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